Content of packaging is neither part of the industrial design, nor does it extend the protection conferred on the design.

The CJEU has put an end to the saga of invalidity of Registered Community Designs for sprats in transparent packaging (C-199/20 and C-200/20) by issuing orders not allowing the appeals of GAMMA-A, SIA to proceed. The orders should finally put an end to a number of pending crippling infringement proceedings against fish processing companies in the Baltic states.

Earlier this year the General Court has rejected appeals against two decisions of the European Union Intellectual Property Office (in R2543/2017-3 and R2516/2017-3) to declare invalid registered Community designs for ‘packaging for foodstuffs’ on the grounds of lack of individual character.

The court found that the designs in question produced an impression of déjà vu in relation to the earlier designs, i.e. did not produce a different overall impression from the earlier designs.

The General Court confirmed the finding of the EUIPO Board of Appeal that the contents of a transparent packaging are not considered part of the design. An informed user perceives the contested designs as packaging according to its purpose and will distinguish between the packaging and the contents. Therefore, the appearance of the foodstuffs in the (transparent) packaging and their specific arrangement in that packaging are not relevant for the purpose of assessing the ‘overall impression’.

Also, the court concluded that contrary to the applicant’s claim, the fact that the contents of the packaging in which it is intended to be incorporated is visible does not extend the protection conferred on the contested design to those contents.

The decisions are especially important for packaging industry. Some takeaways:

  1. i) content of a (transparent) packaging is not considered part of the registered design;
  2. ii) content of a (transparent) packaging and its specific arrangement in that packaging does not influence the protection conferred on the design;

iii) carefully select the object of protection and if you wish to focus protection on a product and its arrangement within the packaging – consider use of visual disclaimer to exclude the packaging from protection.

Jevgenijs is a European patent, trademark & design attorney and Partner of FORAL Patent Law Offices. Jevgenijs was directly involved in all stages of the above invalidity proceedings for the party of the invalidity applicant. you can find Jevgenijs on LinkedIn HERE.


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